“Comedian” – “UNI” case

“COMEDIAN” 

After the legal battle started by the sculptor Druet, the conceptual artist Maurizio Cattelan is facing another claim over his artistic creations. 

On this occasion, the artwork concerned is “Comedian”, commonly known as a banana duct-taped to a wall. The artwork was exhibited in 2019 at the Art Basel Miami Museum, in Florida, and was sold for $120,000.

The artist Joe Morford alleged that Cattelan infringed his own 2000 artwork “Banana & Orange”, which was registered with the US Copyright Office and published on social media. The artwork was pretty similar to Cattelan’s “Comedian” as it also involved a banana and an orange duct-taped to a green wall. 

For this reason, Morford filed a lawsuit for copyright infringement before a federal court in the Southern District of Florida, alleging that Cattelan’s work was extremely similar to his own. 

The judge has now rejected Cattelan’s arguments to dismiss the lawsuit, namely that tape and fruit may not be subject to copyright laws and that it cannot be proven that Cattelan was inspired by Morford’s work. 

Instead, the judge considered that Morford's “Banana & Orange” met the minimum standard of originality to be protected by copyright, hence the lawsuit may continue in the coming months. 

Morford is seeking for a $390,000 compensation, but he will have to prove that Cattelan had access to his artwork. 

"UNI" CASE

In 2008, the company Mitsubishi Pencil Co. Ltd, registered the figurative mark with word elements “UNI” as a European Union Trade Mark (EUTM) before the EUIPO. The registration concerned goods in Class 16, namely “writing instruments including correction pens”.

In 2018, the company Unimax Stationery (the applicant), filed an application for a declaration of invalidity of the contested EUTM, on the basis of articles 51.1.a) and 7.1.b) and d) of the Regulation 40/94 (now Regulation 2017/1001). 

The Cancellation Division of the EUIPO rejected the invalidity request, hence Unimax appealed to the Boards of Appeal of the EUIPO (BoA). The BoA upheld the decision of the Cancellation Division and dismissed the appeal on the grounds that no lack of distinctive character was found between the meaning of the EUTM and the characteristic of the goods at issue. 

Unimax lodged an appeal against the BoA’s decision before the General Court (GC). 

As regards the lack of the distinctive character alleged by the applicant, the Court noted that the distinctive character possessed by the EUTM must serve to identify the origin of the goods and services. That distinctive character must be assessed, by reference to the goods in respect of which registration is sought, and by reference to the relevant public’s perception of the mark.

Note that a EUTM can be declared invalid if it was registered despite the existence of one absolute ground for refusal. For instance, if the sign lacked of distinctive character, pursuant to article 7.1.b) of the Regulation 2017/1001.

From its side, Unimax claimed that there was a link between the contested mark "UNI" as an abbreviation of the words “university” or “unicolour” and the characteristics of the designated goods, and this could lead to an association with “learning” or “writing”.

The GC held that regardless of the meaning of the term “UNI”, even if it was referred to “university” or to “unicolor”, it was capable of indicating to consumers the commercial origin of the goods at issue.

Moreover, concerning the declaration of invalidity based on the infringement of article 7.1.d) of the Regulation – i.e. that the contested mark consisted exclusively of a sign which have become customary-, the applicant did not submit any evidence to support this ground and therefore it was dismissed by the Court. 

Consequently, there were enough factors for the Court to consider the existence of distinctive character and therefore to reject the invalidity request. Hence, the Court dismissed the appeal and confirmed the BoA’s decision. 

This is the last weekly blog post before the summer break. We will be back in September with more exciting IP news!